Welcome to the Jungle: Policing the Amazon Marketplace Against Brand Copycats
December 2, 2020
With the holidays upon us, and with the coronavirus pandemic spiking, many consumers are looking to e-commerce sites to satisfy their shopping needs. While this presents an opportunity to many companies selling their products on-line, the highly competitive digital retail environment also carries the risk of counterfeiters misappropriating some of those sales. For companies selling products on the Amazon marketplace, the site has created tools to help with brand enforcement and to mitigate the risk of counterfeits.
Developing a strategy for protecting legitimate business interests from counterfeiters and copycats, and understanding the available enforcement tools are crucial for companies doing business on Amazon.
In general, a ‘trademark’ is a distinctive name, logo, brand, word, phrase, symbol, design, or combination of these, adopted and used by an individual or organization to identify its products or services and distinguish them from others in the marketplace.
The essential function of a trademark is to identify the source or origin of products or services, allowing consumers to associate a particular quality or experience with the goods or services bearing the trademark. The trademark translates into brand recognition and, in some cases, brand loyalty.
Protecting your brand involves both (1) securing trademark rights (either through common law use or through registration), and (2) enforcing those rights (if necessary) against other companies selling competitive products using your trademark or a confusingly similar one. Most trademark enforcement strategies typically involve sending cease and desist letters to the offenders, waiting for a response, and then in some cases, filing lawsuits – which can be an expensive and time-intensive undertaking.
For trademark owners, Amazon has made the process of policing counterfeiters on the Amazon marketplace much easier and more efficient.
The Amazon Brand Registry and Its Benefits
The Amazon Brand Registry is an Amazon-created program designed to provide brand owners with a mechanism for protecting their brands from counterfeiting in its marketplace. The Amazon Brand Registry lists several benefits, including:
- control over Amazon product pages that use the owner’s brand, so customers are more likely to see the correct information associated with the brand;
- search tools designed specifically for brands for finding and identifying cases of potential infringement;
- if an infringement is identified, a simple workflow to submit a report of possible infringement to Amazon for review and appropriate action; and
- proactive brand protections that attempt to identify and remove potentially bad listings such as:
- Product listings that are not for the brand, and incorrectly use trademarked terms in their titles.
- Images that contain a logo, but are for products that don’t carry the brand name.
- Sellers shipping products from countries in which the brand owner does not manufacture or distribute its brand.
- Product listings being created with a brand name when the brand owner has already listed its full product catalog on Amazon.
Requirements for the Amazon Brand Registry
As an initial requirement, to enroll in the Amazon Brand Registry in the U.S., your company must have an active Federal trademark registration on the Principal Register. In general, having a federally registered trademark provides an owner with several benefits, including a nationwide claim of trademark rights and possible enhanced damages against infringers. If you have not yet registered your trademark with the U.S. Patent and Trademark Office, the benefits of the Amazon Brand Registry may give you additional reasons to do so.
To take advantage of the Amazon Brand Registry, make sure you seek protection on the Principal Register of the USPTO, as opposed to the Supplemental Register. The Supplemental Register provides trademark protection for marks that are found to be “merely descriptive” of the goods, but could eventually acquire brand distinctiveness within the marketplace. Although the Supplemental Register can be an excellent option for companies looking to establish protection over a descriptive mark while they develop their trademark rights, it won’t enable you to use the Amazon Brand Registry. For a mark that is borderline “descriptive,” you may want to work with trademark counsel to develop strategies for getting it on the Principal Register in order to take advantage of the Amazon Brand Registry.
In addition to the U.S., the Amazon Brand Registry also provides protection in other country marketplaces. However, Amazon requires you to have a trademark registration in each country or region where you seek protection. Amazon currently accepts trademark registrations from government trademark offices in Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, the Netherlands, Turkey, Singapore, Saudi Arabia, the United Kingdom, the European Union, and the United Arab Emirates. Again, if Amazon is important for your product distribution (or if you are worried about counterfeiters on Amazon), you should consult with trademark counsel and consider developing your foreign trademark filing strategies with these regions in mind.
The Impact of the Amazon Brand Registry
According to Amazon, as of December 2020, the Amazon Brand Registry has over 350,000 brands enrolled worldwide. Through the use of the Brand Registry, over 2.5 million “bad actor” accounts were stopped before they published a single listing for sale and over 6 billion suspected bad listings were blocked before they were published to the Amazon store.
Amazon continues to work on developing IP protections in their marketplace to battle counterfeiting and infringement. As of September 2020, Amazon requires US-based third-party sellers to display their names and addresses on their public facing profiles to promote seller transparency.
While counterfeiting may continue to be a problem on the Amazon marketplace, the tools are available for a brand owner to protect its brand. If the Amazon marketplace is a significant distribution channel for your products or industry, you should consider using the Amazon Brand Registry as part of your company’s IP strategy.